Conversion to or from a Provisional Application

I.

CONVERSION FROM A NONPROVISIONAL APPLICATION TO A PROVISIONAL

APPLICATION

37 CFR 1.53  Application number, filing date, and completion of

application.

*****

(c)

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(2) An application for patent filed

under paragraph (b) of this section may be converted to a

provisional application and be accorded the original filing date of

the application filed under paragraph (b) of this section. The

grant of such a request for conversion will not entitle applicant

to a refund of the fees that were properly paid in the application

filed under paragraph (b) of this section. Such a request for

conversion must be accompanied by the processing fee set forth in

§ 1.17(q)

and

be filed prior to the earliest of:

(i) Abandonment of the application filed under

paragraph (b) of this section;

(ii) Payment of the issue fee on the application

filed under paragraph (b) of this section; or

(iii) Expiration of twelve months after the filing

date of the application filed under paragraph (b) of this

section.

*****

An application filed under

37 CFR 1.53(b)

may be

converted to a provisional application in accordance with the procedure described

in

37 CFR

1.53(c)(2)

. The procedure requires the filing of a request

for conversion and the processing fee set forth in

37 CFR

1.17(q)

. The provisional application filing fee

(

37 CFR

1.16(d)

) and the surcharge set forth in

37 CFR

1.16(g)

are also required, although these fees do not need

to be paid with the request for conversion. If the provisional application filing

fee and the surcharge are not paid at the time of filing of the request for

conversion, the Office will send a Notice to File Missing Parts in the provisional

application requiring these fees. Filing of the request in the nonprovisional

application is required prior to the abandonment of the

37 CFR

1.53(b)

application, the payment of the issue fee, or the

expiration of 12 months after the filing date of the

37 CFR

1.53(b)

application, whichever event is earlier

equest for

conversion, the Office will send a Notice to File Missing Parts in the provisional

application requiring these fees. Filing of the request in the nonprovisional

application is required prior to the abandonment of the

37 CFR

1.53(b)

application, the payment of the issue fee, or the

expiration of 12 months after the filing date of the

37 CFR

1.53(b)

application, whichever event is earlier. The grant

of any such request does not entitle applicant to a refund of the fees properly

paid in the application filed under

37 CFR 1.53(b)

.

Converting a nonprovisional application to a provisional

application will not avoid the publication of the nonprovisional application

unless the request to convert is recognized in sufficient time to permit the

appropriate officials to remove the nonprovisional application from the

publication process. The Office cannot ensure that it can remove an application

from publication or avoid publication of application information any time after

the publication process for the application has been initiated. For information on

procedures for removing an application from publication, see

MPEP §

1120

.

A provisional application is not entitled to claim priority to or

benefit of a prior-filed application under

35 U.S.C. 119

,

120

,

121

,

365

, or

386

. See

MPEP §

201.04

. After the nonprovisional application has been

converted to a provisional application, any priority or benefit claims submitted

in the nonprovisional application will be disregarded.

Applicants who wish to file a request for conversion under

37 CFR

1.53(c)(2)

by mail should designate “Mail Stop Conversion”

as part of the U. S. Patent and Trademark Office address.

II.

CONVERSION FROM A PROVISIONAL APPLICATION TO A NONPROVISIONAL

APPLICATION

37 CFR 1.53  Application number, filing date, and completion of

application.

[Editor Note: Applicable to patent applications filed under

35 U.S.C. 111

on or after December 18, 2013. See

pre-PLT (AIA) 37 CFR 1.53(c)

for the rule otherwise

in effect.]

*****

version”

as part of the U. S. Patent and Trademark Office address.

II.

CONVERSION FROM A PROVISIONAL APPLICATION TO A NONPROVISIONAL

APPLICATION

37 CFR 1.53  Application number, filing date, and completion of

application.

[Editor Note: Applicable to patent applications filed under

35 U.S.C. 111

on or after December 18, 2013. See

pre-PLT (AIA) 37 CFR 1.53(c)

for the rule otherwise

in effect.]

*****

(c)

*****

(3) A provisional application filed under paragraph (c)

of this section may be converted to a nonprovisional application

filed under paragraph (b) of this section and accorded the original

filing date of the provisional application. The conversion of a

provisional application to a nonprovisional application will not

result in either the refund of any fee properly paid in the

provisional application or the application of any such fee to the

filing fee, or any other fee, for the nonprovisional application.

Conversion of a provisional application to a nonprovisional

application under this paragraph will result in the term of any

patent to issue from the application being measured from at least

the filing date of the provisional application for which conversion

is requested. Thus, applicants should consider avoiding this

adverse patent term impact by filing a nonprovisional application

claiming the benefit of the provisional application under

35 U.S.C.

119(e)

, rather than converting the

provisional application into a nonprovisional application pursuant

to this paragraph. A request to convert a provisional application

to a nonprovisional application must be accompanied by the fee set

forth in

§ 1.17(i)

and

an amendment including at least one claim as prescribed by

35 U.S.C.

112(b)

, unless the provisional application

under paragraph (c) of this section otherwise contains at least one

claim as prescribed by

35

U.S.C. 112(b)

l application pursuant

to this paragraph. A request to convert a provisional application

to a nonprovisional application must be accompanied by the fee set

forth in

§ 1.17(i)

and

an amendment including at least one claim as prescribed by

35 U.S.C.

112(b)

, unless the provisional application

under paragraph (c) of this section otherwise contains at least one

claim as prescribed by

35

U.S.C. 112(b)

. The nonprovisional application

resulting from conversion of a provisional application must also

include the filing fee, search fee, and examination fee for a

nonprovisional application, and the surcharge required by

§ 1.16(f)

if

either the basic filing fee for a nonprovisional application or the

inventor's oath or declaration was not present on the filing date

accorded the resulting nonprovisional application (

i.e.,

the filing date of the original provisional

application). A request to convert a provisional application to a

nonprovisional application must also be filed prior to the earliest

of:

(i) Abandonment of the provisional application

filed under paragraph (c) of this section; or

(ii) Expiration of twelve months after the filing

date of the provisional application filed under paragraph (c)

of this section.

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An application filed under

37 CFR 1.53(c)

may be

converted to a nonprovisional application in accordance with the procedure

described in

37

CFR 1.53(c)(3)

. Applicants should carefully consider the

patent term consequences of requesting conversion rather than simply filing a

nonprovisional application claiming the benefit of the filing date of the

provisional application under

35 U.S.C. 119(e)

. Claiming the

benefit of the provisional application under

35 U.S.C. 119(e)

is less

expensive and will result in a longer patent term. The procedure requires the

filing of a request in the provisional application for the conversion of the

provisional application to a nonprovisional application and the fee set forth in

37 CFR 1.17(i)

ling date of the

provisional application under

35 U.S.C. 119(e)

. Claiming the

benefit of the provisional application under

35 U.S.C. 119(e)

is less

expensive and will result in a longer patent term. The procedure requires the

filing of a request in the provisional application for the conversion of the

provisional application to a nonprovisional application and the fee set forth in

37 CFR 1.17(i)

. The nonprovisional application resulting

from conversion of a provisional application must also include the basic filing

fee, search fee, and examination fee for the nonprovisional application. In

addition, if the provisional application was not filed with an executed oath or

declaration and the appropriate fees for a nonprovisional application, the

surcharge set forth in

37 CFR 1.16(f)

is required.

Furthermore, an inventor’s oath or declaration is required to be filed in

accordance with

37 CFR 1.53(f)

if the

provisional application was filed on or after September 16, 2012 or

pre-AIA

37 CFR 1.53(f)

if the provisional application was filed

prior to September 16, 2012. See

MPEP § 601.01(a)

. Filing of the

request for conversion in the provisional application is required prior to the

abandonment of the provisional application or the expiration of 12 months after

the filing date of the

37 CFR 1.53(c)

application,

whichever event is earlier. The grant of any such request does not entitle

applicant to a refund of the fees properly paid in the application filed under

37 CFR

1.53(c)

.

Applicants who wish to file a request for conversion under

37 CFR

1.53(c)(3)

by mail should designate “Mail Stop Conversion”

as part of the U. S. Patent and Trademark Office address.